Hammers USA, Inc.1

Trademark Trial and Appeal Board

Feb 22, 2016

No. 85611025 (T.T.A.B. Feb. 22, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hammers USA, Inc.1
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Serial No. 85611025
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Victoria Newland of Law Offices of Victoria Newland
for House of Hammers, Inc.

Andrew C. Leaser, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Kuczma, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Jim Greco originally filed the application, and then assigned it to House of Hammers, Inc.
(assignment recorded with the USPTO at Reel/Frame Numbers 5282/0826). House of
Hammers, Inc. subsequently assigned it to Hammers USA, Inc. (assignment recorded with
the USPTO at Reel/Frame Numbers 5692/0280).
Serial No. 85611025
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I. Background

A predecessor in interest to Hammers USA, Inc. (“Applicant”) applied for
registration on the Principal Register of the mark HAMMER in standard characters
for “Skateboarding clothing, headwear and footwear, namely, beanies; belts;
footwear; hats; jackets and socks; pants; shirts; sweatshirts; t-shirts” in
International Class 25 (“the Application”).2 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as likely
to cause confusion with the registered mark shown below for “Jackets and Hats” in
International Class 25 and “Bowling Balls” in International Class 28 (the
“Registration”).3

After the Examining Attorney made the refusal final, Applicant appealed to this
Board and filed a request for reconsideration which argued against the refusal and
also amended the identification as reflected above to specify that Applicant’s
clothing is skateboarding clothing. The Examining Attorney accepted the
amendment but denied the request for reconsideration. We affirm the refusal to
register.

2 Application Serial Number was filed on April 27, 2012 based on intent to use under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
3 Registration Number 1331008 issued April 16, 1985; renewed.
Serial No. 85611025
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II. Likelihood of Confusion

The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380
F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test
assesses not whether the marks can be distinguished in a side-by-side comparison,
but rather whether their overall commercial impressions are so similar that
confusion as to the source of the goods offered under the respective marks is likely
to result. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102
USPQ2d 1546, 1551 (TTAB 2012).

Serial No. 85611025
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Similarity of the Marks
Applicant’s proposed mark consists only of the word HAMMER. The cited mark
consists of the identical word, HAMMER, in block letters that appear inside the
outline of a hammer. Clearly, the two marks sound identical. Visually, they share a
key similarity because the applied-for mark is a standard character mark and could
be presented in any font style, size, or color, including in the same block lettering
and size as the word HAMMER in the Registration. See 37 C.F.R. § 2.52(a). Given
this, the design element in the mark in the Registration constitutes the only real
difference between the marks. However, as a pictorial representation of a hammer,
the design merely reinforces the literal element shared by both marks. The word
HAMMER and design in the registered mark and the word HAMMER in the
applied-for mark have the same meaning, and the overall commercial impressions
therefore also remain similar. We also note that while the mark in the Registration
comprises both words and a design, “the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed.” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U.,
116 USPQ2d 1129, 1134 (Fed. Cir. 2015), citing CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983). If a mark comprises both wording and a
design, greater weight is often given to the wording, because it is the wording that
purchasers would use to refer to or request the goods or services. See, e.g., In re
Viterra, Inc., 671 F.3d 1358, 1366, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); see also
In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding
Serial No. 85611025
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applicant’s mark, MAX with pillar design, and registrant’s mark, MAX, likely to
cause confusion, noting that the “addition of a column design to the cited mark ... is
not sufficient to convey that [the] marks ... identify different sources for legally
identical insurance services”).
Thus, considering the marks in their entireties, they are quite similar visually,
share a comparable commercial impression, and are phonetically identical. This du
Pont factor weighs in favor of likely confusion.
Relatedness of the Goods and Trade Channels
Turning next to the goods, we must determine whether their degree of
relatedness rises to such a level that consumers would mistakenly believe the goods
and services emanate from the same source. The comparison must be based on the
identifications in the Application and Registration. See Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). If likelihood of confusion exists with respect to
any of Applicant’s identified goods or services in a particular class, the refusal of
registration must be affirmed as to all goods in that class. See Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
On their face, the identifications show that the goods overlap in part. Applicant
seeks registration for various items of skateboarding clothing, including “hats” and
“jackets.” The Registration’s identified goods in International Class 25 consist of
“Jackets and Hats.” Even considering Applicant’s narrower identification of
Serial No. 85611025
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skateboarding jackets and hats, they fall within the Registration’s unrestricted
identification of the broader categories of jackets and hats. See In re Jump Designs,
LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (broad wording in an identification is
presumed to encompass all goods of the type described, including those in more
narrow identification).
Applicant argues that “the distinctiveness of the image, marketing, and trade
channels renders confusion as to origin highly unlikely.” 25 TTABVUE at 4.
Applicant contends that the image of its now-predecessor-in-interest, the original
applicant Jim Greco, as “a famous skateboarder,” along with its exclusive sales
through “skateboarding and Action Sports-oriented shops,” differentiates its goods
from those in the Registration. Applicant then attempts to limit the unrestricted
identification of goods in the Registration to “a bowling-specific brand purposefully
aimed at professional bowlers” “sold exclusively in bowling specific retailers and
professional bowling shops.” Id. at 5.
However, this line of argument to restrict the Registration must be rejected.
While Applicant amended its identification to narrow the scope of clothing to
“skateboarding” clothing, as noted above, the identification in the Registration
remains unrestricted and lacks any limitation as to trade channels or classes of
purchasers. We therefore must presume that Registrant’s goods are marketed in all
normal trade channels for “Jackets and Hats” and to all normal classes of
purchasers for such goods. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the
Serial No. 85611025
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identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”); In re Wilson, 57 USPQ2d
1863, 1865 (TTAB 2001). Even, assuming arguendo, we accepted Applicant’s
assertion that the Registrant’s jackets and hats actually travel only in trade
channels associated with bowling, this fact must be deemed irrelevant in this ex
parte proceeding. The identification of goods in the Registration, “Jackets and Hats”
without limitation, controls, not the goods as sold in the marketplace. See
Cunningham, 55 USPQ2d at 1848. Attempts in an ex parte proceeding to argue
limitations outside the identified goods in the cited registration effectively
constitute improper collateral attacks on the validity of the registration. In re Dixie
Restaurants, Inc., 105 F.3d 1405, 105 F.3d 1405, 1408 (Fed. Cir. 1997). Accordingly,
given the overlapping goods and trade channels, we find that these du Pont factors
also heavily favor likely confusion.4
Number and Nature of Similar Marks in Use on Similar Goods
Applicant’s remaining argument against likely confusion rests on the premise
that a “crowded field” of marks containing the word HAMMER exists for clothing or
footwear, and that it should be permitted to join the field. In its January 22, 2013

4 In addition to the overlapping goods, the Application identifies other clothing items for
which the Examining Attorney provided substantial evidence to show the relatedness of
these goods to the “Jackets and Hats” identified in the Registration. See January 29, 2013
Office Action at 2-98; August 17, 2013 Denial of Request for Reconsideration at 2-107.
Serial No. 85611025
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Response to Office Action, Applicant submitted the following registrations for
consideration:5

MARK

REGISTRATION
NUMBER
GOODS OWNER

3178548 footwear Under
Armour,
Inc.

HAMMER JEANS (“JEANS”
disclaimed)
3472321 Clothing,
namely,
pants, shirts,
sweaters,
tops, namely
blouses, tank
tops, tee-
shirts,
pullovers,
vest and
jackets
R.O.N.X.
Fashion
Group
Limited
(“MAN” disclaimed) 3704037 boots, hats,
jackets,
pants, shirts
Matt
Becker,
Harold
Grafton,
Greg
Becker

5 Applicant’s July 29, 2013 Request for Reconsideration referred to “25” third-party
registrations containing the word HAMMER, but only introduced evidence of five into the
record. The Examining attorney has objected to the consideration of any third-party
registrations other than the five properly made of record. We sustain the Examining
Attorney’s objection and therefore we decline to consider any third-party registrations other
than the five Applicant submitted in its Request for Reconsideration. See In re Compania
de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-
party registrations insufficient).
Serial No. 85611025
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3955509 Men’s
clothing,
namely shirts,
suits, vests,
sport coats,
neck ties,
pocket
squares,
socks, pants,
and knitwear
in the nature
of shirts
Humble
Fashion
LLC
(translation of
MARTELLO is
hammer)
3983050 Leather
clothing
namely,
shoes,
jackets, belts
and ties.
Brand Q,
Inc.

The Examining Attorney contends that this evidence should be accorded little
weight because the registrations do not establish actual use in the marketplace. The
Examining Attorney further points out that each registration is distinguishable
from the mark in the cited Registration for various reasons. We agree with the
Examining Attorney that all five registered marks contain other matter in addition
to HAMMER (or its foreign translation), either wording, designs, or both, that help
distinguish them from

whereas Applicant’s mark includes no additional distinguishing matter. The
HAMMER MAN and design registration includes a design of a figure using a
jackhammer, creating a distinct commercial impression from the mark in the
Registration with the word HAMMER and the outline of the hand tool. Although
the HAMMER MADE and design mark includes a design of the hand tool, the use of
Serial No. 85611025
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“hammer-made” in connection with clothing creates a distinct and somewhat
incongruous commercial impression that differs from the mark in the Registration.
The UA HAMMER registration for “footwear” includes a highly stylized UA in
addition to the word HAMMER. The MARTELLO and design registration includes
numerous design elements such as a hat and olive branches, consists of the Italian
word MARTELLO rather than its English translation, HAMMER, and while the
record lacks additional evidence necessary for consideration of the doctrine of
foreign equivalents, this “is not an absolute rule and should be viewed merely as a
guideline.” See Palm Bay Imps., Inc., 73 USPQ2d at 1696. The closest third party
registration seems to be that for the mark HAMMER JEANS, with “JEANS”
disclaimed, but even the disclaimed matter must receive some significance in
comparing marks. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1676 (Fed. Cir. 2015) (Must “avoid[] the error of giving no
significance to the term, which is impermissible notwithstanding that the term is
generic and disclaimed.”).
Thus, we find that the registered marks submitted by Applicant are not
comparable to Applicant’s mark, consisting only of the single word HAMMER. See
In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(Each case must be assessed “on the record of public perception submitted with the
application”). We find that the record of third party registrations does not establish
that consumers could rely on any difference in Applicant’s mark to distinguish it
from that in the Registration. We consider this du Pont factor neutral.
Serial No. 85611025
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Based on the similarity of the marks, as well as the overlap and relatedness of
the goods, and the overlapping trade channels, we find confusion likely.
Decision: The refusal to register Applicant’s mark under Section 2(d) is
affirmed.